ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Viviana Niccoli, EY Tax & Law
In contrast, Article 4.3, letter (c), specifies that the “breach of a contractual or any other duty to limit the use of the trade secret” is unlawful. Article 5.3 of the Copyright Directive 209/24 states that “[t]he person having a right to use a copy of a computer program shall be entitled, without the authorisation of the right holder, to observe, study or test the functioning of the pro- gram in order to determine the ideas and princi- ples which underlie any element of the program if he does so while performing any of the acts of loading, displaying, running, transmitting or storing the program which he is entitled to do.” Furthermore, Recital 14 clarifies that “[a] person having a right to use a computer program should not be prevented from performing acts neces- sary to observe, study or test the functioning of the program, provided that those acts do not infringe the copyright in the program” . This principle is fully confirmed by the ECJ deci - sion of 2 May 2012, C-406/2010. The Italian provisions contained in Article 64-ter of the Italian Copyright Law are fully compliant with this, stating: “The person who has the right to use a copy of the computer program may, without the authorization of the rights holder, observe, study or test the operation of the pro- gram, for the purpose of determining the ideas and principles on which each element of the program itself is based, if he performs such acts during operations of loading, displaying, execut- ing, transmitting or storing the program which he has the right to execute. Contractual clauses agreed upon in violation of this paragraph and paragraph 2 shall be null and void.” Consequently, when combining these two sets of regulations, if a trade secret is substantially
embodied in software, it is not possible to pre - vent reverse engineering by a licensee or a con - tractual partner, and any contractual rule pro - hibiting such activity will be considered invalid. 1.8 Computer Software and Technology In Italy, civil law does not provide separate and specific protection for trade secrets concern - ing computer software and technology; instead, these are covered by the general principles of trade secret protection derived from the CPI. Consequently, there is no additional, distinct legislation offering a specialised suite of protec - tions in this area. It is worth noting that, due to the limitations on software protection (which is primarily through copyright for the “expression” of the code and preparatory works), trade secrets are frequently used to protect aspects of software excluded from copyright, particularly algorithms. This approach can offer a broader scope of protec - tion than copyright and may serve as a viable alternative to pursuing a patent application for computer-related inventions. Patent applications would become publicly available upon publica - tion, potentially exposing them to the risk of nul - lity proceedings due to the prohibition outlined in Article 52.2(c) of the European Patent Con - vention. 1.9 Duration of Protection for Trade Secrets In Italy, trade secret protection lasts for as long as the information is kept confidential. Once a trade secret is revealed and made available to the public, it loses its protected status, and this applies whether disclosures are intention - al or accidental. On the other hand, controlled disclosure (such as sharing the information under NDAs or other
136 CHAMBERS.COM
Powered by FlippingBook